1. What are the procedures for filing patent applications in your jurisdiction?
Any person may apply for a patent, either alone or jointly with another. The applicant is required to provide: his or her details including name, address, nationality, and state of incorporation if the applicant is a US corporate entity; a specification, that is, a description of the invention, one or more claim(s) and any drawings referred to in the description or claims, and; an abstract with a figure indicated for publication.
If the applicant has filed an application earlier in a country party to the Paris Convention or World Trade Organisation, he or she may claim priority from the earlier application in the Singapore application to be filed. If priority is claimed, the filing must be done within 12 months of the date of filing of the earlier application, and the date of filing and the country in which the earlier application was filed should be submitted at the time of filing. Singapore is also a PCT contracting state and the national phase entry deadline is 30 months from the priority date.
2. How long will it take to register a patent and what are the standard costs?
The time taken for a patent to be granted for a Singapore patent application depends on the complexity of the invention and the search and examination option elected for the application. The fees for filing a national phase entry application of an international application under the Patent Coorperation Treaty (PCT) and a patent application other than a national phase entry in Singapore is S$220.80 and S$179.80, respectively. The fee for filing a request for a search and examination report is S$2,662. The fee for filing a request for the issuance of the certificate of grant for the first 25 claims is S$207.80.
This represents one of the many search and examination options available for a Singapore patent application and does not include professional fees and the costs for filing responses and amendments in the course of the examination. The cost of search and examination may be avoided or reduced by relying on the results of a corresponding application.
3. What is the scope of patent protection in your jurisdiction?
The scope of patent protection in Singapore is determined by what is claimed in the patent. Section 113(1) of the Singapore Patents Act (the Act) states that: “an invention …unless the context otherwise requires, be taken to be that specified in a claim of specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in the specification”. There are no specific provisions in the Act that define how claims are interpreted. In determining the scope of a patent claim, the courts of Singapore have generally relied on a “purposive construction” as set out in Catnic Components Ltd v Hill & Smith Ltd [1982] (RPC 183) in which paragraph 243 states:
A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge. The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked.
4. Is there substantive examination and if so what is typically the nature and extent of correspondence with the patent examiner?
Yes, an applicant can request substantive examination of a patent application. In Singapore, substantive examination is conducted by the examiners in the Austrian Patent Office, the Danish Patent and Trademark Office, and the Hungarian Patent Office. Upon issuance of a written opinion following a request for substantive examination, the applicant is given an opportunity to respond to the written opinion within five months of the date of the registrar’s letter. The applicant may also correspond with the examiners by email to seek clarification on the objections and comments raised in the written opinion.
5. What are the requirements on obviousness and inventive step?
The requirements for obviousness and inventive step are provided in Section 15 of the Act which states: “An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue of section 14(2) and without having regard to section 14(3)”.
The terms obvious and person skilled in the art are not defined in the Act. The Intellectual Property Office of Singapore published a Guide on Patentability Issues arising during Search & Examination (the Guide). In the Guide, it is indicated that the test that the examiners should use when assessing inventive step is the approach taken by the Court of Appeal in First Currency Choice Pte Ltd v Main-Line Corporate Holdings Ltd [2007] (SGCA 50) (FCC case). In the FCC case, the Court of Appeal adopted the four-step test laid down by the English Court of Appeal in Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] (RPC) in paragraphs 73 to 74 which state:
There are, we think, four steps which require to be taken in answering the jury question. The first is to identify the inventive concept embodied in the patent in suit. Thereafter, the court has to assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, common general knowledge in the art in question. The third step is to identify what, if any, differences exist between the matter cited as being “known or used” and the alleged invention. Finally, the court has to ask itself whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention.
6. What types of inventions or ideas can be patented? Are there any notable or unusual exceptions?
Generally, an invention can be patented in Singapore if the invention meets the requirements of novelty, inventive step and industrial applicability. However, an invention of a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body shall not be taken to be capable of industrial application. Further, an invention is not patentable if the publication or exploitation of the invention would be generally expected to encourage offensive, immoral or anti-social behaviour.
7. How can you appeal a denied application? Are there any time limits on making an appeal?
There are no provisions to allow an appeal for a denied application in Singapore.
8. Is it possible to file pre-grant or post-grant oppositions and if so how do these work?
There are no provisions to file pre-grant and post-grant oppositions.
9. What is the process for modifying patents?
Post-grant amendments may be filed to amend the specification of a granted patent at any time after grant, provided that there are no pending proceedings in which the validity of the patent may be questioned. An amendment that results in the specification disclosing any additional matter or extending the protection conferred – broadening the claims – by the patent is not allowed. Alternatively, a request for the correction of an error in the specification of a granted patent may be filed. However, the correction should be obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction.
10. Is there anything else about the filing system in your jurisdiction that patentees should be aware of?
A key feature of the Singapore patent system is that the onus is on the applicant to ensure that the claims meet the patentability requirements of unity of invention, novelty, inventive step and industrial capability at the time of grant. In Singapore, a patent can be granted in view of an adverse examination report. However, the adverse examination report may be a prima facie indication of invalidity of the patent and, as such, the patent may be vulnerable to attack at a later stage by an interested or infringing party.
11. How can patents be enforced in your jurisdiction? What options do patent owners have?
A patent owner has two options: he or she can either begin a patent infringement action in the High Court, or agree with the alleged infringer to refer the question of whether there is infringement to the Patent Office. The Patent Office may refer the matter to the High Court if it believes that the matter is more properly determined by the High Court.
12. Are there some types of patents that are harder to enforce than others?
Generally, no.
13. Where does the burden of proof lie for infringement allegations?
In general, the patent owner bears the burden of proof to show – on a balance of probabilities – that the defendant infringed the patent. However, where the subject matter of the patent is a process for obtaining a new product, the burden of proving that the product is not made by the process shall be on the alleged infringer if the product is new or a substantial likelihood exists that the product is made by the process and the proprietor of the patent has been unable through reasonable efforts to determine the process actually used.
14. What are the typical remedy options for infringement? How are damages awards calculated?
Available remedies for patent infringement include an injunction, damages or an account of profits, an order for the defendant to hand over or destroy infringing articles, and a declaration that the patent is valid and has been infringed by the defendant.
However, the court will not award damages or order an account of profits against an innocent infringer – where the defendant proves that on the date of the infringement he was not aware and had no reasonable grounds for supposing that the patent existed.
Additionally, if the plaintiff obtained rights to a patent by virtue of a transaction or instrument and the relevant transaction or instrument is not registered within six months, the plaintiff will not be entitled to damages or an account of profits for infringements occurring before registration. This is unless he can show that it was not practicable to register within the six-month grace period and registration took place as soon as practicable thereafter.
Damages are assessed with reference to the plaintiff’s loss or damage. For example, if the infringement caused the plaintiff to suffer lost sales, the measure of damages can be his lost profit based on the lost sales. An account of profits is assessed based on profits derived by the defendant from the infringement.
15. How can you appeal an enforcement decision? How long and how costly is the process?
A decision of the High Court can be appealed to the Court of Appeal. The appeal must be filed within 30 days of the High Court judgment, and will usually be heard within six months of filing. The typical cost of an appeal is in the range of S$100,000 to S$500,000 ($80,500 to $402,000) depending on the complexity of the case.
16. Who holds the burden of proof for patent invalidity claims?
The defendant bears the burden of proof on a balance of probabilities standard, as for any civil claim. As there is no presumption of validity for a Singapore patent, the Singapore court is entitled to review the question of validity de novo without taking into account the decision of the patent office that examined the related patent application.
17. What kind of expertise does your patent court system hold?
There is no specialist patents court in Singapore. Additionally, the presiding judge is unlikely to be technically trained: the High Court judge typically relies on expert witnesses to provide expertise on technical issues.
18. Who can act in a litigation case in court?
Only a person admitted as an advocate and solicitor of the Supreme Court of Singapore can appear on behalf of a party to the action. Alternatively, the party may opt not to engage lawyers and appear as a litigant-in-person.
19. What are the alternatives to litigation in courts?
As discussed in question 11, an alternative is to agree with the alleged infringer on referring the question of whether infringement exists to the Patent Office. Alternative dispute resolution mechanisms such as mediation and arbitration may also be explored.
20. Are there any other issues relevant to your jurisdiction?
Singapore has a self-assessment regime, which requires that only claims or related claims in the Singapore patent application be examined, but not necessarily allowed, before the applicant may file for grant of the patent. The patent owner may not claim damages for infringement if the claims relied upon were found not to have been examined.
Firm biography |
ATMD Bird & Bird is one of the few law firms in Singapore that has a widely diversified intellectual property (IP) practice with specialist in-house patent attorneys and a litigation team that handles only IP work. All its IP lawyers handle both contentious and non-contentious work, making them stronger overall IP advisors. The firm offers a full range of intellectual property services from the protection of IP rights including trade marks, patents and designs, to the enforcement of IP rights including IP litigation and anticounterfeiting as well as the exploitation and commercialisation of IP rights. The firm offers advice and counsel in all sectors on IP matters ranging from major strategic reviews to one-off counsel on the application of specific IP law. The firm combines its legal expertise with an in-depth understanding of the various sectors and industries in which their clients operate, including aviation & aerospace, communications, life sciences, food & beverage, information technology, media, and sports. The firm is consistently recognised as a leading Singapore law firm for IP by top legal publications like Chambers & Partners and The Legal 500, and has won many awards in the last few years including the Singapore IP Law Firm of the Year for the third consecutive year at the Managing IP 2011 Global Awards. The firm has also been involved in many landmark IP cases before the Singapore courts. |
